Ian G. DiBernardo is Co-Chair of Stroock’s Intellectual Property and Technology Group and Co-Chair of Stroock’s FinTech practice. He counsels both emerging and established companies, focusing on complex intellectual property and technology transactions and intellectual property litigation.
Ian structures and negotiates agreements involving outsourcing, cloud computing, license, distribution and joint venture agreements. He conducts due diligence on the intellectual property and information technology aspects of a broad range of corporate transactions, including mergers and acquisitions, joint ventures and corporate finance transactions. He frequently counsels clients on cybersecurity, data protection and privacy.
As Co-Head of Stroock’s FinTech practice, Ian works closely with banks, broker-dealers, funds, insurers and emerging financial technology providers. For example, he frequently negotiates standalone IP and technology agreements, including cloud computing, electronic trading and dark pool agreements, as well as licenses to financial indexes, market data, trading analytics, order management systems, risk management systems and other trading technologies. Ian also represents FinTech clients in mergers and acquisitions, joint ventures and other corporate transactions, including the sale of a data center, the acquisition of an alternative trading system, and the creation of a joint venture for the development of a power and energy trading platform.
Ian has first-chair trial and appellate litigation experience, successfully representing both plaintiffs and defendants in patent, trade secret, copyright and breach of contract disputes. He has successfully argued before the U.S. Court of Appeals for the Federal Circuit.
Ian has particular experience with financial products and systems, consumer electronics, Internet technologies and medical devices and systems.
He has a long history of pro bono service and now serves on Stroock’s pro bono committee. He has been recognized by Chambers USA and Super Lawyers multiple times and has been named an IP Star by Managing Intellectual Property Magazine.
- Guggenheim Global Trading in its negotiating licenses to trading analytics and order management, risk management and portfolio management systems.
- Evolution Markets in its licensing of trading technology for use with its electronic OTC derivatives trading platform.
- Nomura Holding America, Inc. and Nomura Securities International Inc. in structuring and negotiating software development and license agreements relating to bespoke alternative trading systems, risk management software and back-office systems.
- Instinet Holdings Incorporated and Nomura in connection with the sale of ATS operator Chi-X Canada Ltd. to Nasdaq, Inc. and Chi-X Asia-Pacific entities to private equity firm, J.C. Flowers.
- Atlas Merchant Capital as co-lead investor in the $2 billion acquisition of Talcott Resolution, the run-off life insurance and annuity division of The Hartford.
- Arch Insurance in negotiating outsourcing and cloud computing transactions relating to claims processing and back-office systems.
- Carl Zeiss Meditec in connection with licensing and joint venture matters.
- FUJIFILM Medical Systems in its acquisitions of Problem Solving Concepts, Inc. and Empiric System LLC, providers of medical imaging and information systems.
- Versamed Corporation, a provider of portable ventilators, in its acquisition by GE Healthcare.
- NRDC Equity Partners, LLC in its acquisition of the 48-store Lord & Taylor retail chain from Federated Department Stores (NYSE: FD) for $1.2 billion in cash.
- The Children’s Place Retail Stores, Inc. in its acquisition of The Disney Store chain of retail stores in the U.S. and Canada from The Walt Disney Company.
- Obtained $30.2 million jury verdict in a patent infringement suit related to 3-D display technology.
- Defended international electronics manufacturer against 13 plaintiffs asserting infringement of 41 patents relating to digital encoding and digital television transmission standards, settling on favorable terms.
- Successfully defended international electronics manufacturer, obtaining grant of summary judgment of invalidity of a patent directed to liquid crystal displays.
- Successfully defended manufacturer of protein bars in a patent infringement case, securing a stay and ultimately dismissal of the litigation based on rejection of over 100 asserted claims in inter partes reexaminations.
Honors & Awards
- Chambers USA: America’s Leading Lawyers for Business
- Managing Intellectual Property Magazine IP Stars: Patent Star–New York
- Super Lawyers
- Board Member, Licensing Executives Society
- Chair, High Technology Sector, 2017-2018
- Chair Elect, High Technology Sector, 2016-2017
- Co-chair, Cloud Services & Software Committee, 2012-2015
- Member, Publication Review Committee, Wall Street Technology Association, 2011-present
- Board Member, Licensing Executives Society
- Adjunct Professor, New York University, School of Continuing and Professional Studies, 2010-2012
Speeches & Events
- Moderator, “Cybersecurity, Data Privacy and Workplace Risks in the New Normal,” Stroock and CohnReznick Webinar, May 13, 2020
- Panelist, “Machine Learning, RPA & AI,” Wall Street Technology Association, September 11, 2019
- Moderator, “IP Protection in the Blockchain Industry,” Licensing Executives Society 2018 Annual Meeting, October 17, 2018
- Presenter, “Mitigating Vendor Risk,” Stroock Intellectual Property Group CLE, June 19, 2018
- Moderator, “Blockchain and Cryptocurrency: New Tools for the Digital Economy,” Licensing Executives Society International 2018 Annual Conference, April 30, 2018
- Panelist, “High Tech Sector Presents Protecting Trade Secrets Today,” Licensing Executives Society, Webinar, May 24, 2017
- Presenter, “IP & Tech Transactions for the In-House Practitioner: Key Considerations,” Stroock Intellectual Property Group CLE, January 26, 2017
- Speaker, “Ensuring the Continuity of Business Operations to Raise Profits and Curtail Interruptions in Service,” 18th Annual IT Service Agreements and Licensing – Cloud, Open Source & Software, November 17-18, 2014
- Co-author, “USPTO Extends Certain Deadlines Amid COVID-19 Pandemic,” Stroock Special Bulletin, April 7, 2020
- Co-author, “SEC’s Voya Order Underscores Importance of Cybersecurity Practices,” Bloomberg Law, October 23, 2018
- Author, “New York’s new regulatory cyber-security obligations: the details,” Compliance Matters, September 6, 2018
- Co-author, “NYDFS Cybersecurity Deadlines Approaching for Financial Services Companies and Credit Reporting Agencies,” Stroock Special Bulletin, August 28, 2018
- Co-author, “California Enacts Broad-Reaching Consumer Privacy Legislation,” Stroock Special Bulletin, June 28, 2018
- Co-author, “California Poised to Enact Broad-Reaching Consumer Privacy Legislation,” Stroock Special Bulletin, June 27, 2018
- Co-author, “SIFMA’s New Data Aggregation Principles and What They Mean for the Financial Sector,” Stroock Special Bulletin, April 18, 2018
- Co-author, “Pen Testing: The Good, the Bad and the Agreement,” New York Law Journal, March 2, 2018
- Co-author, “Under close inspection,” Intellectual Property Magazine, February 28, 2018
- Co-author, “SEC Updates its Focus on Business Continuity and Transition Plans,” Wall Street Technology Association – Ticker e-Zine, August 25, 2016
- Co-author, “SEC Focuses on Business Continuity and Transition Plans: Implications for Registered Investment Advisers and Funds and Their Critical Service Providers,” Stroock Special Bulletin, August 2, 2016
- Co-author, “Federal Circuit Finds Software Invention Eligible for Patenting,” Stroock Special Bulletin, May 23, 2016
- Co-author, “Trends and Observations in Software,” les Nouvelles, December 2013
- “Industry Reaction to Helsinn Healthcare v. Teva Pharmaceuticals Oral Arguments,” IP Watchdog, December 13, 2018
- “Signs of Life for Doctrine of Equivalents in the US,” Managing Intellectual Property, September 27, 2017
- “Nintendo 3DS Patent Case Heads to High Court,” Courthouse News, August 30, 2017
- “High Court urged to Delete Nintendo’s IP Win On 3-D Tech,” Law360, August 30, 2017
- “Tomita, Nintendo Lock Horns Anew in 3DS Infringement Fight,” Law360, August 4, 2015
Admitted To Practice
U.S. Patent and Trademark Office
U.S. District Court, Eastern District of New York; U.S. District Court, Southern District of New York
U.S. Court of Appeals, Federal Circuit
U.S. Supreme Court
J.D., magna cum laude, Syracuse University College of Law, 1995; Order of the Coif; Syracuse Law Review
B.S.E.E., cum laude, Bucknell University, 1992; Tau Beta Pi
In The Spotlight
NewsBack To Full Bio
May 11, 2020 | IP Stars
Ian DiBernardo and Laura Goldbard George Named 2020 IP Stars
April 30, 2020 | Press Release
Stroock Represents IsoAge Technologies in Sale to Kerry Group
April 23, 2020 | Chambers USA
Stroock Ranked in 7 Practice Areas by Chambers USA 2020; 17 Leading Lawyers Recognized
October 28, 2019 | New York Law Journal
Stroock Verdict Ranked #4 in Intellectual Property
October 22, 2019 | Licensing Executives Society
Ian DiBernardo Elected to LES Board of Directors
September 13, 2019 | Press Release
67 Stroock Attorneys Recognized as 2019 ‘Super Lawyers,’ ‘Rising Stars’
April 25, 2019 | Chambers USA
Stroock Ranked in 9 Practice Areas by Chambers USA 2019; 25 Leading Lawyers Recognized
February 4, 2019
Stroock Guides Ultimate Software in $11B Going Private Transaction
December 13, 2018 | IP Watchdog
Ian DiBernardo Quoted in IP Watchdog
July 31, 2018
Stroock Advises Ultimate Software On Its $300 Million Acquisition of PeopleDoc
June 13, 2018 | Managing Intellectual Property
Ian DiBernardo Recognized as an IP Star by Managing Intellectual Property
June 1, 2018
Stroock Advises Atlas Merchant Capital as Co-Lead Investor in Closing of $2 Billion Acquisition of Talcott Resolution from The Hartford
May 3, 2018
Stroock Ranked in 11 Practice Areas by Chambers USA 2018; 29 Leading Lawyers Recognized
February 23, 2018
Stroock Becomes Charter Member of Legal Center of Excellence, a New Global Platform for Studying Developments in FinTech and Blockchain
December 5, 2017
Stroock Advising Atlas Merchant Capital as Co-Lead Investor in $2 Billion Acquisition of Talcott Resolution from The Hartford
December 4, 2017 | Law360
Stroock deal team mentioned in "Hartford Sells Life Insurance Business For $2.05B"
September 27, 2017 | Managing Intellectual Property
Ian DiBernardo and Kenneth Stein quoted in "Signs of Life for Doctrine of Equivalents in the US"
September 6, 2017 | Intellectual Property Magazine
Ian DiBernardo and Kenneth Stein featured in "Law firm petitions SCOTUS to review doctrine of equivalents test"
August 30, 2017 | Courthouse News
Ian DiBernardo quoted in "Nintendo 3DS Patent Case Heads to High Court"
August 30, 2017 | Law360
Ian DiBernardo quoted in "High Court Urged To Delete Nintendo's IP Win On 3-D Tech"
June 1, 2017
Stroock Earns Top Tier Rank in 11 Practices by Chambers USA 2017: 30 Leading Attorneys Recognized
May 27, 2016
Stroock Ranked By Chambers USA For 2016
August 4, 2015 | Law360
Ian G. DiBernardo quoted in "Tomita, Nintendo Lock Horns Anew In 3DS Infringement Fight"
June 22, 2012
Kodak v. Apple Squabble Could Spread; Patriot Coal Fraudco Theorists Howl – Distressed Briefing
September 28, 2006
Stroock Represents Arrowpoint Capital Corp. in Management Buyout of Royal & Sun Alliance USA
PublicationsBack To Full Bio
April 7, 2020 | Stroock Special Bulletin
USPTO Extends Certain Deadlines Amid COVID-19 Pandemic
October 23, 2018 | Bloomberg Law
Ian G. DiBernardo, Jeffrey M. Mann and André B. Nance Published in Bloomberg Law
September 6, 2018 | Compliance Matters
“New York's new regulatory cyber-security obligations: the details”
August 28, 2018 | Stroock Special Bulletin
“NYDFS Cybersecurity Deadlines Approaching for Financial Services Companies and Credit Reporting Agencies”
July 24, 2018 | Stroock Special Bulletin
“Securities and Tax Classifications of Cryptocurrency Relating to ICOs”
June 28, 2018 | Stroock Special Bulletin
“California Enacts Broad-Reaching Consumer Privacy Legislation”
June 27, 2018 | Stroock Special Bulletin
“California Poised to Enact Broad-Reaching Consumer Privacy Legislation”
April 18, 2018 | Stroock Special Bulletin
“SIFMA’s New Data Aggregation Principles and What They Mean for the Financial Sector”
April 11, 2018 | Stroock Special Bulletin
“Three Key Federal Income Tax Issues Raised by Cryptocurrencies”By: Brian J. Senie
March 2, 2018 | New York Law Journal
"Pen Testing: The Good, the Bad and the Agreement"
February 28, 2018
"Under close inspection"
December 14, 2017 | Stroock Special Bulletin
"December 31 Deadline for Electronically Registering DMCA Agents with the Copyright Office"
August 25, 2016 | Wall Street Technology Association - Ticker e-Zine
“SEC Updates its Focus on Business Continuity and Transition Plans”
August 2, 2016 | Stroock Special Bulletin
"SEC Focuses on Business Continuity and Transition Plans: Implications for Registered Investment Advisers and Funds and Their Critical Service Providers"
May 23, 2016 | Stroock Special Bulletin
"Federal Circuit Finds Software Invention Eligible for Patenting"
December 16, 2013
“LES Annual Meeting Mini Plenary Session Review: Special Techniques and Considerations when Valuing Property Transactions”
2013 Issue 3
"Using Data Maps as an Effective Tool for Data Security Collaboration"
Volume 25, Number 2, February 2013
"Patentability of Business Methods: Decoding the Federal Circuit’s CLS and Bancorp Decisions"
August 23, 2012
Patentability of Business Methods: Decoding the Federal Circuit’s CLS and Bancorp Decisions
November 14, 2011
"Case Study: Ultramercial v. Hulu"
October 13, 2011
"Ultramercial v. Hulu: Is the Patentability Pendulum Swinging in Favor of Business Method Patents?"
October 13, 2011
"Business Method Patents: A Tale of Two Decisions"
August 23, 2011
Cybersource Corporation v. Retail Decisions, Inc.
June 23, 2011
"Second Circuit: You Make It, They Can Break It: The Fly on the Wall Eludes the Ghost of INS v. AP"
May 9, 2011
"Reviewing Joint Infringement"
May 1, 2010
"Protect Your Data with the Hot News Doctrine"
March 22, 2010
“'Hot News' Doctrine Protects Investment Firms’ Actionable Equity Recommendations”
March 20, 2009
"H&R Block" and "Every Penny Counts" Cases Ask “Where’s the Machine?”
November 5, 2008
“In re Bilski: Federal Circuit Addresses Standard for Patentability of Business Methods”
“TiVo v. EchoStar: Federal Circuit Does The Time Warp”
September 1, 2007
"Practical Implications of SanDisk Corp. v. STMicroelectronics"
November 6, 2006
"Technology Due Diligence"
September 29, 2006
"Protection for Financial Indexes, ETFs, Other Products"
August 3, 2006
"Intellectual Property Protection for Financial Indexes, ETFs and Other Financial Products"
August 1, 2006
"Copyrights and Trademarks and Patents! Oh, My!"
December 6, 2005
"The Supreme Court’s Integra Lifesciences v Merck KGaA Decision: Adverse Effect on the Relationship between Big Pharma and Biotech?"
August 22, 2005
"4 Ways to Save an IP License"
June 27, 2005
"Intellectual Property Issues Surrounding Stem Cell Research"
EventsBack To Service
May 13 | 11AM
Cybersecurity, Data Privacy and Workplace Risks in the New Normal
September 11, 2019
Wall Street Technology Association's Machine Learning, RPA & AI
October 14-17, 2018
Licensing Executives Society 2018 Annual Meeting
June 19, 2018
Mitigating Vendor Risk
April 30, 2018
LESI 2018 Annual Conference: Strong IP Drives the Bottom Line
May 24, 2017
High Tech Sector Presents: Protecting Trade Secrets Today
January 26, 2017
IP & Tech Transactions for the In-House Practitioner: Key Considerations
November 17-18, 2014
18th Annual IT Service Agreements and Licensing – Cloud, Open Source & Software conference
November 14, 2012
Investing in Intellectual Property Assets and Enforcement
May 8-11, 2012
SALT 2012 Conference
Thursday May 21, 2009
New York: Media Information Exchange Group's The Legal Side of Digital Media
Thursday, January 22, 2009
The Legal Aid Society's Pro Bono Seminar: Intellectual Property for the Micro Entrepreneur